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Saturday, 31 December 2016

The last Land Rover Defender rolled off the production line in January 2016, after almost 70 years it had been the longest-running production car in the world. As Mr Justice Nugee put it the Defender is a "very well-known, if not indeed iconic, vehicle". A replacement model is being developed and its memory will live on... not least as a trade mark.

Jaguar has two trade marks for DEFENDER which protect it in the UK:

a UK mark filed in 1989 for "motor land vehicles and parts and fittings therefor; all included in class 12" and;

It was therefore far from thrilled to discover a Canadian company, Bombardier, marketing a "fun, recreational off roader" (but not road-legal) "side-by-side" vehicle under the name Defender.

What happened?

Jaguar sued for trade mark infringement pleading both double identity and likelihood of confusion. The defendant entered a Defence for the likelihood of confusion claim but not the double identity claim. It then sought to amend its Defence to cover the double identity claim and add a counterclaim for partial revocation on the basis of non-use and/or bad faith.

This judgment (not yet on Bailii) concerns Jaguar's application for summary judgment and Bombardier's application to amend its Defence and add a counterclaim.

Although the summary judgment claim was for infringement, Bombardier accepted that unless it could partially revoke the mark it did not have a defence to the double identity claim. This meant that the hearing focused on the circumstances in which partial revocation is possible in the UK and EU.

The Sagrada Familia has plenty of faith

Partial revocation for non-use

Bombardier argued that Jaguar had registered the DEFENDER mark for "motor land vehicles" but had only used the mark for part of the class. Because the EU mark was less than five years old (so could not be revoked for non-use) and because it was a summary judgment application, the judge did not consider this ground.

Partial revocation on the grounds that the application was made in bad faith

As George Michael might have said about Sections 3(6), 47(1) and 47(5) of Trade Marks Act 1994 and , "you've gotta have faith when making your trade mark application". (see also articles 52(1)(b) and 52(3) of the Regulation).

However, unlike the Trade Marks Act 1994, the Regulation does not include a requirement that the applicant must be using or have a bona fide intention to use a trade mark. Therefore whilst an incorrect declaration regarding intention to use under section 32(3) Trade Marks Act 1994 may result in partial or even total invalidity of a UK mark there is no equivalent for EU marks.

Bombardier argued that Jaguar Land Rover had no intention to use the term DEFENDER in relation to any other land vehicle, motor vehicle etc than the iconic Defender series which they characterised as a single car product whose essential features have remained the same since 1948 and consequently the EU application was made in bad faith. This led the court to an interesting consideration of whether an EU trade mark is liable to be declared invalid for bad faith where an applicant had no intention of using it for the full specification at the time of registration.

Nugee J referred to various comments from the English judiciary including Jacob J (as he then was) in Laboratoire De La Mer Trade Marks that "there is simply no deterrent to applicants seeking very wide specifications of goods or services for CTMs - with all the greater potential for conflict that may give rise to" and "it seems bizarre to allow a man to register a mark when he has no intention whatever of using it" at para 19.

Cats can defend you in the Underground

However, because this concerned interpretation of the Regulation it was a matter for EU rather than UK judges to determine. There was no relevant authority from the Court of Justice but the General Court had considered the issue in Psytech which Nugee J summarised as "a decision in principle that the law does not provide a basis to find that the size of the list of goods and services amounts to bad faith".

Mr Justice Nugee concluded that decisions of the General Court are binding on the English High Court by virtue of Section 3(1) and Schedule 1 of the European Communities Act 1972 and Article 19(1) of the Treaty on the European Union [38].

Is a broad list of goods and services in an EU trade mark application bad faith?

Although Demon Ale and Internetportal were considered, the facts here were very different. In those earlier cases, the applicants in question had no intention of using the mark for, respectively, beer and safety belts. What Bombardier was effectively saying was that that Jaguar Land Rover had not intention to use DEFENDER for the entire range of goods covered by the application.

Following his review of the legislation and authorities, Nugee J concluded that "neither the Regulation nor the case law provides a basis that would enable the court to find that there is bad faith in view of the size of the list of goods and services in the application".

As the application for partial revocation failed, there was no defence to the double identity infringement claim and the judge gave summary judgment on the EU trade mark infringement claim.

That's not a car!
The Land Rover High Capacity Pick up in action

Was the EU application for DEFENDER made in bad faith?

You might think that was the end of the matter. However, in view of the "expressions of disquiet" by some English judges on the issue Nugee J went on to consider what bad faith meant in an EU trade mark context and whether Jaguar Land Rover might have applied for its mark in bad faith.

In Trillium at [11], the Cancellation Division helpfully identified bad faith as "the opposite of good faith". They went on to note that this "generally impl[ies] or involv[es], but [is] not limited to, actual or constructive fraud, or a design to mislead or deceive another, or any other sinister motive".

Although not limited to these categories the judge accepted that bad faith is a serious allegation and one which requires facts to establish. In this instance Bombardier had failed to suggest an alternative narrower specification which Jaguar Land Rover could have used instead. In oral argument it was suggested that the specification could be limited to "motor cars, automobiles, cars" (i.e. class 120199).

The judge disagreed. The Defender series includes professional vehicles made to bespoke specifications including e.g. a high capacity pick up which Nugee J noted is clearly not a "car". The judge summarised the situation as follows:

This means that the defendant is seeking to allege that the claimant has acted in bad faith in effect by applying for too broad a specification, but has not successfully identified any narrower specification which the claimant should have applied for instead, the only suggestion being one which seems to be manifestly unsustainable.

What does this mean?

It may be possible to argue bad faith in relation to an over broad specification in the future but you need to be sure that the force facts are with you and identify a viable alternative specification.

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